USPTO Patents Application 09870801

PLEASE STAMP TO ACKNOWLEDGE RECEIPT OF THE FOLLOWING:

In re Application of: Karl L. Ginter, et al.

Serial No.: 09/870,801 Group Art Unit: 2132

Filed: June 1,2001 Examiner: G. Barron, Jr.

For: SYSTEMS AND METHODS FOR SECURE TRANSACTION MANAGEMENT AND
ELECTRONIC RIGHTS PROTECTION

1 . information Disclosure Statement (2 pages)

2. Form PTO-1449 (3 pages)

3. 48 references

4. Notice of Pending Litigation (4 pages)

5. fixhibits A-M

Dated: October 31 , 2002 Attorney: Kama J. Nisewaner

Docket No.: 07451.0001-18000 Mail Drop: CA

PATENT
Customer Number 22,852
Attorney Docket No. 0745 1 .000 1 . 1 8
InterTrust Ref. No.: IT-5.2.1.1

EST THE UNITED STATES PATENT AND TRADEMARK OFFICE

Filed: June 1, 2001

For: SYSTEMS AND METHODS FOR
SECURE TRANSACTION
MANAGEMENT AND
ELECTRONIC RIGHTS
PROTECTION

Commissioner for Patents
Washington, DC 20231

NOTICE REGARDING RELATED LITIGATION

Applicants hereby notify the U.S. Patent and Trademark Office that several patents
assigned to InterTrust Technologies Corporation ("InterTrust") are involved in litigation. The
present application, Serial No. 09/870,801, is a continuation of U.S. Application Serial No.
09/342,899, issued as U.S. Patent No. 5,917,912, which is one of the patents at issue in the
litigation. Those applications claim the benefit of priory of a common parent with U.S. Patent
Nos. 6,389,402 Bl; 6,253,193 Bl; 6,185,683 Bl; 5,982,891; 5,949,876; 5,915,019; and
5,892,900, which are also at issue in the litigation.

HENDERSON
FA R A BOW
GARRETT&
DUNNER Utf

1300 I Street, NW
Vashington, DC 20005
202.408.4000
Fax 202.408.4400
www.finnegan.com

In re Application of:

Karl L. GINTER et al.

Group Art Unit: 2132

Serial No.: 09/870,801

Examiner: G. Barron, Jr.

Sir:

FINNECAN
HENDERSON
FAR A BOW
GAR RETT&
DUNNER kkf

1 300 I Street, NW
/ashington, DC 20005
202.408,4000

Fax 202.408.4400
www.finnegan.com

STATUS OF RELATED LITIGATION

The status of the litigation is as follows. On April 26, 2001, InterTrust filed a Complaint
alleging that Microsoft Corporation ("Microsoft") was infringing U.S. Patent No. 6,185,683 Bl,
assigned to InterTrust. See InterTrust Tech. Corp. v. Microsoft Corp. (C 01-1640 SBA, N. D.
Ca.). A copy of the Complaint is attached as Exhibit A. On June 26, 2001 and July 26, 2001,
InterTrust amended its complaint to add U.S. Patent Nos. 6,253,193 Bl; 5,920,861; and
5,940,5m. 1 See Exhibit B.

On August 29, 2001, Microsoft filed its Answer to InterTrust 's Second Amended
Complaint. See Exhibit C. On September 17, 2001, Microsoft filed a First Amended Answer
and Counterclaims, asserting twelve affirmative defenses, including, inter alia, non-
infringement, invalidity, dedication to the public, prosecution history estoppel, and inequitable
conduct, and counterclaiming for declaratory judgments of non-infringement and invalidity of
the InterTrust patents, and for infringement of U.S. Patent Nos. 6,049,671 and 6,256,668 Bl,
allegedly assigned to Microsoft. See Exhibit D.

On October 26, 2001, InterTrust filed a Third Amended Complaint to add U.S. Patent
Nos. 5,917,912; 5,892,900; and 5,982,891. See Exhibit E. Microsoft filed its Answer and
Counterclaims to InterTrust's Third Amended Complaint on November 8, 2001, see Exhibit F,
and filed an Amended Answer and a "Corrected" Amended Answer on November 14 and 15,
respectively, see Exhibits G and H, asserting several additional affirmative defenses and
counterclaims. See, e.g., id. at pages 9 and 13-19.

The '504 patent was subsequently dismissed from this suit.

-2-

FINNEGAN
HENDERSON
FAR A BOW
CAR R ETT &
DUNNER Lif

1 300 I Street, NW
'ashington, DC 20005
202.408.4000

Fax 202.408.4400
www.finnegan.com

On February 6, 2002, InterTrust filed a second lawsuit against Microsoft, alleging
infringement of U.S. Patent No. 6,157,721 ("the '721 patent"). See Exhibit I. 2 Microsoft filed
its Answer and Counterclaims on March 25, 2002, and filed a First Amended Answer and
Counterclaims on April 12, 2002, asserting thirteen affirmative defenses, including, inter alia,
non-infringement, invalidity, dedication to the public, prosecution history estoppel, inequitable
conduct, and unenforceability, and counterclaiming for declaratory judgment of non-
infringement and invalidity. See Exhibit J. On June 5, 2002, Microsoft served its Initial
Disclosures Pursuant to Fed. R. Civ. P. 26(a)(1), identifying various technologies believed by
Microsoft to bear on the validity of the '721 patent. See Exhibit K.

On July 30, 2002, InterTrust filed a motion for leave to file a Fourth Amended
Complaint, adding claims of infringement of additional InterTrust patents. This motion was
granted on October 22, 2002. The Fourth Amended Complaint was filed on October 24, 2002,
adding to the case claims of infringement of U.S. Patent Nos. 6,1 12,181; 5,915,019; 5,949,876;
and 6,389,402 Bl . See Exhibit L.

On August 16, 2002, Microsoft served its Preliminary Invalidity Contentions Regarding
U.S. Patent Nos. 6,253,193 Bl and 6,185,683 Bl ("Preliminary Invalidity Contentions"). See
Exhibit M. In its Preliminary Invalidity Contentions, Microsoft asserts that certain claims in
those patents are indefinite, lack enablement, and lack an adequate written description.
Microsoft also asserts that certain claims are anticipated or rendered obvious by various
references. See id. at pages 3-7.

This case has since been consolidated with the case filed April 26, 2001.

-3-

REMARKS

In support of its claim that InterTrust's U.S. Patent Nos. 5,892,900; 5,920,861 ; and
6,157,721 are unenforceable, Microsoft cites three references: (1) an article entitled DigiBox: A
Self-Protecting Container for Information Commerce, by Olin Sibert et al. ("the Sibert article");
(2) PCT Publication No. WO 96/27155 ("the PCT Publication"); and (3) U.S. Patent No.
5,910,987 ("the '987 patent"). Applicants note that the Sibert article was cited in connection
with the present application in an IDS filed November 13, 2001. Applicants also note that the
PCT Publication is the international counterpart of U.S. Application No. 08/388,107 ("the '107
application"), a parent of the present application, and that the '987 patent is a continuation of the
'107 application.

If there are any fees due with the filing of this Notice not already accounted for, please
charge the fees to our Deposit Account No. 06-0916

FINNECAN
HENDERSON
F A R A B O W
CAR RETT&
DUNNER tif

1 300 I Street, NW
'ashington, DC 20005
202.408.4000

Fax 202.408.4400
www.finnegan.com

Respectfully submitted,

FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.

Dated: October 30, 2002

-4-

PATENT
Customer No. 22,852
Attorney Docket No. 7451.0001-18
InterTrust No.: IT-5.2.1.1

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re Application of:
Karl L. GINTER, et al.
Application No.: 09/870,801
Filed: June 1, 2001

For: SYSTEMS AND METHODS FOR
SECURE TRANSACTION
MANAGEMENT AND ELECTRONIC
RIGHTS PROTECTION

Commissioner for Patents
Washington, DC 20231

Sir:

INFORMATION DISCLOSURE STATEMENT UNDER 37 C.F.R. S 1.97(b)

Pursuant to 37 C.F.R. §§ 1 .56 and 1 .97(b), Applicants bring to the attention of
the Examiner the documents listed on the attached Form PTO 1449. This Information
Disclosure Statement is being filed, to the best of the undersigned's knowledge, before
the mailing date of a first Office Action on the merits for the above-referenced
application. Applicants also submit herewith copies of the listed documents.

The documents cited herein were cited by Microsoft in the InterTrust Tech. Corp.
v. Microsoft Corp. litigation (C 01-1640 SBA, N. D. Ca.), which involves patents related
to this patent application. See Notice Regarding Related Litigation, filed concurrently
herewith. Some or all of these documents may have been previously cited in other
Information Disclosure Statements filed in this application to which those applications

Group Art Unit: 2132
Examiner: G. Barron, Jr.

claim priority under 35 U.S.C. §120. However, out of an abundance of caution,
Applicants are bringing these documents to the Examiner's attention along with the
additional information that these documents have been mentioned in the litigation.
Applicants respectfully request that the Examiner consider the listed references and
indicate that they were considered by making appropriate notations on the attached
form.

This submission does not represent that a search has been made or that no
better art exists and does not constitute an admission that each or all of the listed
documents are material or constitute "prior art." If the Examiner applies any of the
documents as prior art against any claim in the application and Applicants determine
that the cited documents do not constitute "prior art" under United States law,
Applicants reserve the right to present to the office the relevant facts and law regarding
the appropriate status of such documents.

Applicants further reserve the right to take appropriate action to establish the
patentability of the claimed invention over the listed documents, should one or more of
the documents be applied against the claims of the present application.

If there is any fee due in connection with the filing of this Statement, please

charge the fee to our Deposit Account No. 06-0916.

Respectfully submitted,

FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.LP.

Dated: October 30, 2002 By:

Kama J. Nisewaner
Reg. No. 50,665

-2-

INFORMATION DISCLOSURE CITATION

Atty. Docket No. 07451 .0001-1 8000

Appln. No. 09/870,801

Applicant Karl L. Ginter, et al.

Filing Date June 1,2001

Group: 2132

Examiner
Initial*

Document
Number

Issue Date

Name

Class

Sub
Class

Filing Date
If Appropriate

4,658,093

04-14-87

Hellman

380

25

07-11-83

5,530,235

06-25-96

Stefik, et al.

235

492

02-16-95

5,534,975

07-09-96

Stefik, et al.

355

202

05-26-95

5,603,031

02-11-97

White et al.

395

683

07-08-93

5,629,980

05-13-97

Stefik, et al.

380

4

11-23-94

5,634,012

05-27-97

Stefik, et al.

395

239

11-23-94

5,638,443

06-10-97

Stefik, et al.

380

4

11-23-94

5,715,403

02-03-98

Stefik

395

244

11-23-94

6,016,393

01-18-00

White, et al.

395

683

02-10-97

Examiner
Initial*

Document
Number

Publication
Date

Country

Class

Sub
Class

Translation
Yes or No

WO 93/01550

01-21-93

PCT

G06F

11/34

EP 071 5243 A1

06-05-96

EPO

G06F

1/00

EP 0715244 A1

06-05-96

EPO

G06F

1/00

EP 071 5245 A1

06-05-96

EPO

G06F

1/00

EP 0715246 A1

06-05-96

EPO

G06F

1/00

EP 0715247 A1

06-05-96

EPO

G06F

1/00

Examiner
Initial*

OTHER DOCUMENTS (Including Author, Title, Date, Pertinent Pages, etc.)

Abadi, M., et al., "Authentication and Delegation with Smart-cards," Technical Report 67, DEC
Systems Research Center, October 1990, available at
<http://citeseer.nj.nec.com/article/abadi92authentication.html>, pp. 1-19.

Blaze, M., "A Cryptographic File System for Unix," pre-print of paper for First ACM Conference on
Computer and Communications Security, Fairfax, Virginia, Nov. 3-5,1993, pp. 1-8.

Blaze, M., "Key Management in an Encrypting File System," Proc. Summer '94 USENIX Tech.
Conference, Boston, MA. June 1994, available at

<http://www.usenix.org/publicaitons/libratry/proceedings/bos94/full _papers/blaze.asp>, pp. 1-12.

Castano, S., et al., "Database Security," Addison-Wesley & Acm Press, 1995

Chaum, D., "Achieving Electronic Privacy," Scientific American, August 1992, pp. 96-101.

Page 1 of 3

INFORMATION DISCLOSURE CITATION

Atty. Docket No. 07451 .0001-1 8000

Appln. No. 09/870,801

Applicant Karl L. Ginter, et al.

Filing Date June 1, 2001

Group: 2132

Chaum, D., et al. "Wallet databases with observers," Ernest F. Brickell, editor, Advances in
Cryptology - CRYPTO '92, 12 th Annual International Cryptology Conference, Santa Barbara, CA,
August 16-20, 1992, Proceedings, pp. 89-105.

Chaum, D., "Security Without Identification Card Computers to Make Big Brother Obsolete,"
Communications of the ACM, Vol. 28., No. 10, Oct. 1985, pp. 1-24.

"List of Articles," <www.chaum.com/articles/list-of-articles.htm>, as on August 23, 2002, 4 pages.

Choudhury, A.K., et al., "Copyright Protection for Electronic Publishing Over Computer Networks,"
AT&T Bell Laboratories, Murray Hill, N.J., submitted to IEEE Network Magazine, June 1994, pp. 1-

17.

Cox, B., 'What if there is a Silver Bullet and the competition gets it first?" Journal of Object-
Oriented Programming, June 1992, available at
<http://www.virtualschool.edu/cox/CoxWhatlfSilverBullet.html>, pp. 1-5.

CUPID Protocols and Services (Version 1): "An Architectural Overview," November 1992, available
at <http//www.cni.org/projects/CUPID>, 25 pages.

Custer, H. "Inside Windows NT," Microsoft Press, Redmond WA, 1993.

Denning, D. E., et al., "Data Security," 11 Computing Surveys, No. 3, Sept. 1979, pp. 227-249.

Denning, D. E., "Secure Personal Computing in an Insecure Network," Communications of the
ACM, August, 1979, Vol. 22, No. 8, pp. 476-482.

loannidis, J., et al., "The Architecture and Implementation of Network-Layer Security Under Unix,"
Fourth USENIX Security Symposium Proceedings (Oct.), USENIX, Berkeley, Calif. 1993,

DD 1-11

Kohl, J., et al., "The Kerberos Network Authentication Service (V 5), "Network Working Group
Request for Comments RFC-1510, September 1993, pp. 1-104.

Kohl, U, et al., "Safeguarding Digital Library Contents and Protecting Documents Rather Than
Channels," in D-lib Magazine, September 1997, available at
<http://www.dlib.org/dlib/september97/ibm/09lotspiech.html>, pp. 1-9.

LamDson B et al "Authentication in Distributed Svstems* Theorv and Practice " ACM Trans

1 1 1 Ly O V*/ 1 1 1 ■ | \s V %A 1 • j * WmA LI I \^ I I UVb4 L 1 \*t II III lull lV\4 V./ j w +-\** III <J • II 1 \^ 1 V 1 1 VI 1 1 UVllVw j W 1 V 1 II V4I 1 v ■

Computer Systems, Vol. 10, No. 4 (Nov. 1992), pp. 265-310.

Mori, R. et al., "Superdistribution The Concept and the Architecture," The Transactions of the
IEICE, Vol. E73, No. 7, Tokyo Japan, July 1990, pp. 1133-1146.

Olivier, MS, et al., "A Taxonomy for Secure Object-oriented Databases," ACM Transactions on
Database Systems, Vol. 19, No. 1, March 1994, pp. 3-46.

Olivier, MS, et al., "Building a Secure Database using Self-protecting Objects," Computers &
Security, Vol. 11, No. 3, 259-271, 1992.

Olivier, MS, et aL, "Secure Object-oriented Databases," Ph.D. Thesis, Rand Afrikaans University,
Johannesburg, December 1991, pages I to xiv and 1-183.

Olivier, MS, et al., "DISCO: A Discretionary Security Model for Object-oriented Databases," in GG
Gable and WJ Caelli, Eds., IT Security: The Need for International Cooperation, pp. 345-357,
Elsevier Science Publishers B.V. (North Holland), 1992.

Page 2 of 3

INFORMATION DISCLOSURE CITATION

Atty. Docket No. 07451.0001-18000

Appln. No. 09/870,801

Applicant Karl L. Ginter, et al.

Filing Date June 1, 2001

Group: 2132

Coalition for Networked Information, Interactive Multimedia Association, John F. Kennedy School
of Government, "Proceedings: Technological Strategies for Protecting Intellectual Property in the
Networked Multimedia Environment," 1994, Journal of the Interactive Multimedia Association,
available at <htto7/www cni ora/docs/ima io-workshoD> 308 Daaes

Siebert, O., et al. "Digibox: A Self-Protecting Container for Information Commerce," Proceedings
of the First USENIX Workshop on Electronic Commerce, New York, NY, July 1995, pp. 1-13.

Stefik, M., "Letting Loose the Light: Igniting Commerce in Electronic Publication," Xerox PARC,
Palo Alto CA 1994-1995 35 Daaes

Stefik, M., "Letting Loose the Light: Igniting Commerce in Electronic Publication, in Internet
Dreams' Archeh/Des Mvths and MetaDhors " Massachusetts Institute of Technoloav 1996 dd
219-53.

Stefik M ChaDter 7 Classification in "Introduction to Knowledoe Svstems " Moraan Kaufmann

1 1 1 \ | 1 V 1 • | \^ 1 1 wl |^ 1 I j lUWVl 1 ■ V^^t LIV/ II III III LI VVI W. 1 Vy 1 1 kKJ 1 XI 1 V V ¥ I \A VJ Vw* 1 V W 1 1 1 w | IV 1 1 Mbll 1 1 \WIU 1 1 1 1 W4 lilt

Publishers, Inc., 1995, pp. 543-607.

Tvnar J D pt al "Crvntonranhv* It's Not Ju«5t for Electronic Mail Anvmnre " CMU-CS-Q3-107
School of Computer Science Carnegie Mellon University, Pittsburgh, PA, March 1 f 1993, pp. 1-21.

Tygar, J.D., et al., "Dyad: A System for Using Physically Secure Coprocessors," School of
Computer Science, Carnegie Mellon University, Pittsburgh, PA, pp. 1-41

Tygar, J.D., et al., "Strongbox: A System for Self Securing Programs," CMU Computer Science:
25 Anniversary Commemorative, R. Rashid (ed.) Addison-Wesley, 1991.

White, J.E., "Telescript Technology: The Foundation for the Electronic Marketplace," General
Magic, 1994.

Wobber, E., et al., "Authentication in the Taos Operating System," an extended version of a paper
presented at the 14 th ACM Symposium on Operating System Principles, December 1993, pp. 1-38.

Examiner

Date Considered

*Examiner: Initial if reference considered, whether or not citation is in conformance with MPEP 609; draw line
through citation if not in conformance and not considered. Include copy of this form with next
communication to applicant.

Form PT0 1449

Patent and Trademark Office - U.S. Department of Commerce

Page 3 of 3